BACKGROUND TO THE DISPUTE

Following an application lodged by Nadorcott Protection SARL on 22 August 1995 with the Community Plant Variety Office (‘the CPVO’), the CPVO granted it a Community plant variety right in respect of the NADORCOTT variety of mandarin tree. An appeal with suspensive effect was brought against that decision before the Board of Appeal of the CPVO but was dismissed.

Since 2006, JOSÉ CÁNOVAS PARDO S.L. has cultivated a grove of 4 457 mandarin trees of the NADORCOTT variety.

GESLIVE, on whom the management of the rights over the NADORCOTT variety had been conferred, sent JOSÉ CÁNOVAS PARDO S.L. formal notice on 30 October 2007 demanding that, in the absence of the appropriate licence, it cease the cultivation of that plant variety. CVVP, to whom the management of those rights had been transferred with effect from 2008, sent JOSÉ CÁNOVAS PARDO S.L a new letter demanding that, if it were cultivating some 5 000 mandarin trees of the NADORCOTT variety, it cease that activity.

Having applied in November 2011 for preliminary measures for a declaration of infringement of the exclusive rights over the NADORCOTT variety, CVVP brought two actions against JOSÉ CÁNOVAS PARDO S.L., one for ‘provisional protection’ in respect of the acts of prior to the grant of those rights, that is, before 15 February 2006, the other for infringement in respect of acts after that date. In particular, CVVP sought a declaration of infringement of the exclusive rights over the NADORCOTT variety from 15 February 2006 until the cessation of cultivation. CVVP also applied for an injunction that JOSÉ CÁNOVAS PARDO S.L. be ordered to bring its unlawful cultivation to an end, to remove and, if necessary, destroy any plant material of that variety in Pardo’s possession, and to pay it compensation in respect of such cultivation.

Having found that a period of time of more than three years had elapsed between the date on which the holder of the rights over the NADORCOTT variety had identified JOSÉ CÁNOVAS PARDO S.L as an unlawful cultivator of that variety, that is, at the latest by 30 October 2007, when GESLIVE gave formal notice to JOSÉ CÁNOVAS PARDO S.L, and the date on which CVVP brought its action in November 2011, that court of first instance dismissed the action on the ground that the action for infringement was time barred under Article 96 of Regulation No 2100/94.

 Following CVVP’s appeal against that decision, the Audiencia Provincial de Murcia found that Pardo did not dispute either the cultivation of the trees of the Nadorcott variety or the lack of consent of the holder of the rights in that variety. That court decided that Pardo’s operations resulted in certain acts of infringement which were of an ongoing nature since the trees at issue were continuing to be cultivated. In addition, it held that Article 96 of Regulation No 2100/94 should be interpreted as meaning that the claims relating to those acts of infringement which took place less than three years before CVVP’s action was brought were not time barred but that those relating to acts of infringement which took place more than three years before the claims had been brought were time barred.

Accordingly, Pardo was ordered to pay EUR 31 199 for its acts of infringement and as appropriate compensation for acts performed without the consent of the holder of the Community plant variety right during the period of its provisional protection. In addition, Pardo was ordered to cease all acts of infringement.

JOSÉ CÁNOVAS PARDO S.L brought an appeal on a point of law before the referring court, the Tribunal Supremo against that decision of the Audiencia Provincial de Murcia, challenging the latter’s interpretation of Article 96 of Regulation No 2100/94.

The referring court states that, according to the national case-law on matters of intellectual property, occasional acts of infringement must be distinguished from ongoing acts. In the case of the latter, the period of prescription is extended for as long as the act of infringement continues. In the latter case, the limitation periods are extended for as long as the act constituting the infringement continues.

 In those circumstances, the Tribunal Supremo (Supreme Court) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)      Is an interpretation according to which, provided that the period of three years has elapsed since the holder, once Community protection of the plant variety right was granted, became aware of the infringing act and the identity of the party liable, the actions provided for under Articles 94 and 95 [Regulation No 2100/94] would be time barred, although the infringing acts were continuing until the time the action was brought, contrary to Article 96 of [that regulation]?

(2)      If the first question is answered in the negative, is it to be considered that, in accordance with Article 96 of [the regulation], the limitation period operates only in respect of infringing acts committed outside the three-year period, but not in respect of those taking place within the last three years?

(3)      If the answer to the second question is in the affirmative, in such a situation could the action for an injunction and also for damages succeed only in relation to those latter acts taking place within the last three years?’

DECISION OF THE COURT OF JUSTICE

The first question

According to Article 96 of Regulation No 2100/94, entitled “Limitation period”:

“The right to bring the actions referred to in Articles 94 and 95 shall be barred after three years from the date on which the Community plant variety right was finally granted and the holder has knowledge of the act and of the identity of the infringer or, in the absence of such knowledge, after thirty years from the date on which the act was last carried out.”

The time for such a period to start to run is determined, first, by an objective event, namely when the Community plant variety right has finally been granted, and, second, by a subjective event, namely when the holder of that right has knowledge of the act of infringement and of the identity of the party liable for it.

As to whether there is any priority between those events in triggering the prescription period, it must be held that the starting point for that period is the date of the event that last occurs, namely the grant of the Community plant variety right or knowledge of the act and of the identity of the party liable (judgment of 2 March 2017, Glencore Céréales France, C‑584/15, EU:C:2017:160, paragraph 47).

 It follows that Article 96 of Regulation No 2100/94 cannot be interpreted as meaning that the end of the act of infringement be regarded as the event from which the period of prescription for claims pursuant to Articles 94 and 95 of that regulation starts to run.

In the second place, the wording of Article 96 of Regulation No 2100/94 merely states that the three-year period of prescription starts to run once the holder of the right has knowledge of the ‘act’ of infringement as such and of the party liable for it. That provision does not, however, specify further whether the extent of the duration of the acts of infringement of the holder’s rights or the ongoing nature of such acts should be taken into account. That wording makes clear only that the ‘act’ is one for which a claim may be brought pursuant to Articles 94 and 95 of Regulation No 2100/94.

In that regard, it should be noted, first, that, as of the grant of Community plant variety rights, effecting one of the unauthorised acts referred to in Article 13(2) of Regulation No 2100/94 in respect of a protected plant variety constitutes an ‘unauthorised use’ within the meaning of Article 13(3) of that regulation. Thus, in accordance with Article 94(1)(a) of that regulation, any person who, in those circumstances, effects one of those acts may be sued by the holder to enjoin such infringement or to pay reasonable compensation or both.

Second, as regards the period prior to the grant of such rights, a right holder may, pursuant to Article 95 of Regulation No 2100/94, require reasonable compensation from any person who has, in the time between publication of the application for a Community plant variety right and grant thereof, effected an act that he or she would be prohibited from performing subsequent to that period on account of such rights.

 Accordingly, the answer to the first question referred is that Article 96 of Regulation No 2100/94 must be interpreted as meaning that, irrespective of the ongoing nature of an act of infringement of a protected variety or of the date on which that act ended, the three-year period of prescription set out in that provision in respect of claims pursuant to Articles 94 and 95 of that regulation starts to run from the date on which, first, the Community plant variety right was finally granted and, second, the holder of the right had knowledge of the act and of the identity of the party liable.

The second and third questions

In the light of the foregoing considerations, the answer to the second and third questions is that Article 96 of Regulation No 2100/94 must be interpreted as meaning that claims pursuant to Articles 94 and 95 of that regulation in respect of a set of acts of infringement of a protected variety brought after more than three years have elapsed are time barred only from when, first, the Community plant variety right was finally granted and, second, the right holder had knowledge of each individual act forming part of that set of acts and of the identity of the party liable for them.

JUDGMENT OF THE COURT (SEVENTH CHAMBER) 14 OCTOBER 2021 – CASE C-186/18